INTRODUCTION

With the globalization and integration of commerce, brand names, trade names, marks, and so on have become very important which necessitates the minimum level of protection and effective enforcement mechanisms. If we divide the word trademark into two different ones trade and mark, trade over here means business and mark means includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof; Trademark is all those symbols, words, designs, etc. which can be used to distinguish one’s product with someone else’s. The definition of trademark is given under sec 2 of the Trademark Act of 1999. The definition is as follows “ trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging and combination of colors.

SECTION 9  AND SECTION  11  OF THE TRADEMARK ACT

As already been mentioned the point of differentiation between section 9 and section 11 of the trademark can be said that one gives the grounds for rejection and the other gives the ground for opposition. Sec 9 has seven sub-clauses with deal with different situations wherein a trademark can be rejected. Let’s start with section 9 (1)

Section 9(1) deals with the absolute grounds of rejection of registration and the sub-section of these are as follows Marks that are devoid of any distinctive character, Marks that are descriptive of the goods or services. Marks that have become customary in the current language or in the bona fide and established practices of the trade. For more understanding lets consider an illustration A person wanted to open a sweet shop with the name “SWEET” but it will cause of confusion among the customers regarding what kind of sweets are sold etc.

The next section, section 9 (2) says that Marks that are identical or similar to earlier trademarks for identical or similar goods or services. Marks that are likely to mislead the public about the nature, quality, or geographical origin of the goods or services. Another example here can be if a person wants to have the same mark as Amazon with a slight change but which can create confusion, it cannot be registered as a trademark.

Section 9 (3) comes next in the queue which says that marks are scandalous or obscene. Marks that are contrary to any law for the time being in force. Suppose a person wants to register a photo of another person killing with his gun as a trademark for his product which is the AK 27 Rifle, but cannot use it as it is against law.

Section 9(4) addresses the public order aspect, stating that marks that may hurt religious sentiments or are otherwise offensive may be refused registration. If for example, someone wants to register a picture as a trademark for their product “cement”, the picture demonstrates some Muslims trying to demolish a Hindu temple but cannot because of the cement with which it is made.

Section 9 (5) that trademarks that consist exclusively of signs or indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, or time of production of the goods or rendering of services may also be refused.

Section 9 (6) contains or consists of the shape of goods or their packaging that is necessary to obtain a technical result that may not be registrable. For example, coca-cola has registered the shape of its bottle as a trademark which cannot be used by any other company.

Section 9(7) deals with marks that are of such a nature as to be capable of misleading the public, particularly with regard to the nature, quality, or geographical origin of the goods or services.

 

CASE LAWS RELATING TO SECTION 9 OF THE TRADEMARK ACT

Asian Paints Ltd. v. A. B. M. S. Mohd. (AIR 2009 Del 53)

The trademark “Asian Paints” was challenged for being descriptive. The court held that a mark that has acquired distinctiveness through use can still be registered, even if it is descriptive. This case underscored the importance of proving acquired distinctiveness.

Mahindra & Mahindra Ltd. v. Union of India (AIR 1979 SC 1022)

The company sought to register the mark “Mahindra” for its agricultural equipment. The court affirmed that a mark must be inherently distinctive. The application was initially refused under Section 9(1) for lack of distinctiveness. The case emphasized the need for marks to stand out in the market.

Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (AIR 2001 SC 1952.)

The case involved a dispute over similar trademarks in the pharmaceutical sector. The Supreme Court highlighted the likelihood of confusion due to similarity, which relates to Section 9(2). The judgment emphasized the need for distinctiveness and the potential for consumer deception.

Section 11 of the trademarks act says about the  of objection by the registry and focus on  confusion between the applied-for mark and an existing mark. They vary from jurisdiction to another jurisdiction.

  • The applied-for marks shall not be similar to that of existing or pending marks in the same category of goods.
  • No confusion should be there happening among the consumers in buying the same good but of different brands.
  • There should be no prior use of that trademark by third party and if that is established thay have the right to take actions
  • Protection will be granted to the popular trademarks.

CASE LAWS RELATING TO SECTION 11 OF TRADEMARK ACT

Poonam Goyal v. Rishab Jain (AIR 2009 Del 123).

The case involved the application to register the trademark “MIRACLE” which was opposed due to similarity with an existing trademark. The court ruled that the similarity in the marks and the nature of goods could lead consumers into some kind of confusion and hence was rejected.

Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (AIR 2001 SC 1992).

This landmark case involved similar trademarks in the pharmaceutical sector. The Supreme Court here said that similarity among the trademarks may lead some confusion and hence rejected it.

Hindustan Pencils Pvt. Ltd. v. India Stationery Products Co. (AIR 2004 Del 145).

The case involved the trademark “Nataraj” and its similarity to an existing trademark. The court ruled that despite minor differences, the overall impression of the marks could cause confusion, reinforcing the principles under Section 11.

What can be said to be a difference between section 9 and section 11

While summing up or differentiating between section 9 and section 11 , the things which has to be kept in mind are as follows

Section 9 talks about when a trademark cannot be registered or talks about the grounds of refusal of the trademark wherein it should not be deceptive, not be opposed to morality, should not be obscene , should be distinct from other names, etc.

Section 11 talks about opposing the trademark wherein a third party can take action against it when the mark is almost similar so as to create confusion among consumers about the product. Also, it should not be similar to other registered trademarks.

CONCLUSION

In conclusion, it can be said that sections 9 and sec 11 of the act say when the registration of the trademark can be refused. it states that when the logo design or shape is of that nature which would deceive the consumers, is offensive or duplicative of some other popular brand, it shall not be given the trademark approval. Also, these were the absolute grounds, these are also some grounds that are somewhat confusing as written in section 11 of the trademark act.